March Madness: Preparing for the U.S. Transition to a "First-Inventor-to-File" System

CIPA Journal
December 2012

Article

The Leahy-Smith American Invents Act (AIA) represents the most significant amendment to U.S. patent laws since 1952.1 Most parts of the AIA are already in effect. But the provision that most alters the U.S. patent landscape does not take effect until March 16, 2013. This provision, among other things, replaces the distinctly American "first-to-invent" system with a "first-inventor-to-file" system, and generally broadens the scope of prior art that will apply to a patent claim.

As is often the case, the transition from one system to the other is not as simple as it may initially appear. For example, the current law will remain in use well beyond the March 2013 transition date. And many applications being drafted right now might be treated in ways that the applicants might not initially expect. This article explores the nuances involved in prosecuting patent applications under these coexisting systems and attempts to highlight some traps for the unwary.

New Definitions of Prior Art

In general, the AIA expands the scope of prior art in the U.S. by removing certain geographical, temporal, and language limitations. For example, under the current law, public uses and sales do not act as prior art against a claimed invention unless they occur in the United States.2 Under the AIA, public uses or sales anywhere in the world could serve as prior art.3 Second, under the current law, any publications, public uses, or sales, by anyone, that occur within one-year of the first U.S. filing date may be removed from the applicable pool of prior art if the claimed subject matter was invented prior to those publications, public uses, or sales.4 The AIA restricts this one-year grace period to only certain inventor-based disclosures, and it also re-sets the one-year time window to the year before the first "effective filing date" of the claims rather than to the year before the first U.S. filing date.5 The effective filing date of a claim is generally the earliest priority date that supports that claim, regardless of the country or region in which the priority application was filed or the language in which it was published.6 Third, the AIA abandons the requirement that PCT applications designating the U.S., to serve as prior art as of their international filing dates, rather than merely as of their publication dates, must publish in English.7 As a result of these changes, the scope of prior art will generally be larger under the AIA than under the current law.

Transition Problems

In the next 20+ years, applicants, patent examiners, and courts will need to deal with both laws and with three categories of patents or applications: (1) those with all priority and filing dates before March 16, 2013, (2) those with priority and filing dates that span the March 16, 2013, transition date, and (3) those with all priority and filing dates on or after March 16, 2013. This is illustrated below.

The first and third categories are straightforward. Applications with all filing or priority dates before the transition will be subject to the current law while those with all filing or priority dates after the transition will be subject to the AIA. But unique complexities will arise within the second category of applications, those whose priority and filing dates on either side of the March 2013 transition. For convenience, we term those applications transitional applications.

For example, suppose an applicant files a British priority application in May 2012 and then files a PCT designating the United States and claiming priority to that British application in May 2013. The PCT could be examined in one of three ways once it enters the U.S. national stage, depending on whether it includes disclosures not present in the British priority application and depending on how the original PCT claims are drafted.8 If the PCT and British disclosures are identical, then the effective filing date of all claims is May 2012 and the PCT will be examined under the current law. But, if new matter is added upon filing the PCT, then things become more complex. In that case, if all of the original PCT claims are fully supported by the British application and do not rely on the newly added matter for support, the U.S. national stage will be examined under the current law. If all of the original PCT claims rely in part on the new matter for support, then the U.S. national stage will be examined under the AIA.

A special case arises where the original PCT claims include some claims fully supported by the British application and some claims that rely on the newly added matter for support. In that case, the different claims have two different effective filing dates, both before and after the change in U.S. law. Nevertheless, the entire application will be examined under the new U.S. law.9 This is true even if the claims are later amended to cancel any claims with the later effective filing date.10 Even further, once an application family has transitioned to the AIA, it is impossible to go back.11 That application as well as all later-filed continuation or divisional applications will be examined under the new law regardless of whether they contain claims with effective filing dates prior to March 2013. Note, however, that transitional applications examined under the AIA will remain subject to the current interference provisions, meaning that certain competing patent applications may still be removable from the pool of prior art by proof of an earlier date of invention.12

Duty to Flag New Matter

The U.S. Patent and Trademark Office (USPTO) has proposed new rules for applications examined under the AIA, which include procedures to assist patent examiners in identifying transitional applications and determining which law applies to them.13 Specifically, applicants must notify the examiner if their application either: (1) contains or ever contained any claims with effective filing dates on or after March 16, 2013, or (2) discloses any subject matter newly presented on or after March 16, 2013.14 This information must be provided within 4 months of the filing of the application with no extensions of time permissible. Failing to provide this notice may result in loss of priority rights—a very harsh result.15 Those rules are currently undergoing public comment and the USPTO expects to issue its final rules by February 16, 2013.

Prosecution Strategies for AIA and Transitional Applications Using U.S. Provisional Applications

Let's return to the scenario above in which an applicant files a priority British application in May 2012 followed by a PCT application designating the U.S. in May 2013. Under the current law, there is a one year grace period prior to the first U.S. filing date, during which certain items can be removed from the pool of prior art if they occur after the applicant's date of invention. In addition, under the current law, the application can act as prior art against competing applications as of its first U.S. filing date.16 Thus, obtaining an early U.S. filing date is advantageous under the current law. To obtain a U.S. filing date as early as possible, this applicant would typically file a U.S. provisional application either the same day as the British application or just afterwards. Under the AIA, however, prior art is measured against the first effective filing date anywhere in the world; not against the first U.S. filing date.17 This all but eliminates the advantage of filing a U.S. provisional in parallel with a non-U.S. priority application for applications in which the earliest priority date will be on or after March 16, 2013, (i.e., those in the third category shown in the chart above).

Minimizing Prior Art Problems in Transitional Applications

As mentioned earlier, more items of prior art will typically apply to applications examined under the AIA than to those examined under the current first-to-invent law. Thus, careful prosecution strategies are a must for transitional applications.

For instance, consider a British application and a parallel U.S. provisional each filed in May 2012 with identical disclosures to invention A+B. Suppose that the applicant intends to add additional element C upon filing a PCT application and/or nonprovisional U.S. application under the Paris Convention. One strategy for minimizing the prior art applicable to the new invention A+B+C is simply to submit the PCT application on March 15, 2013, instead of in May 2013. This would ensure that the application is examined under the current U.S. law. The disadvantage of this strategy, however, is that the patent term may be shortened by several weeks. Nonetheless, if the final years of the 20-year patent term are not critical and if the invention A+B+C is completed and ready for drafting, then this may be an appealing strategy.

An alternative strategy, especially where the final years of the patent term are important or where the new matter cannot be added early, is to file two U.S. applications in May 2013, one disclosing the new element C and one not disclosing C. In that scenario, the claims of the application disclosing element C may be examined under the AIA while those of the application disclosing only A+B will be examined under the current law. This strategy allows for a neat separation between the claims to which the old and new laws apply, which may be more efficient for both the applicant and the examiner. The disadvantages of this strategy in comparison to the first one, however, are that claims drawn to A+B+C will be examined under the AIA, meaning more prior art might apply, and that it may be more costly given that two applications and patents would be necessary.

A variant strategy is to file a single PCT application or U.S. nonprovisional on the May 2013 Paris Convention date, but then to carefully manage the claim drafting so as to avoid having any claims drawn only to A+B examined under the AIA. For example, so long as the original PCT claims recite only A+B, the initial U.S. national stage application would be examined under the current law. A continuation or divisional application could then be used to introduce claims to A+B+C. The disadvantages of this approach are similar to those of the second strategy just discussed, but further, it is possible that in some non-U.S. jurisdictions obtaining protection for A+B+C may be more difficult because that invention was not explicitly presented in the original PCT claims.

Invoking the AIA to Solve Particular Prior Art Problems

In general, applicants will seek ways to avoid having transitional applications examined under the AIA. But there are also a few specific situations in which strategically invoking examination under the AIA may actually help to salvage an otherwise unpatentable claim.

One example occurs where an applicant did not file a U.S. provisional application upon or just after their non-U.S. priority application filing. In that situation, under the current law, the one year grace period during which prior art is removable will only cover the period between the priority date and the U.S. filing date. In the scenario above, this would be from the British filing of May 2012 up to the PCT filing date of May 2013. Under the AIA, the one year grace period applies only to certain inventor-based disclosures, but it is automatically set as the year prior to the effective filing date of the claim in question.18 Thus, while the grace period under the AIA is more limited in scope, it may be a full year earlier in time—from May 2011 up to the British priority date of May 2012. As a consequence, an inadvertent inventor-based disclosure occurring just before the May 2012 priority date may bar patentability under the current law but might not be prior art under the AIA. Thus, in situations were no U.S. provisional was filed along with a non-U.S. priority application and the applicant becomes aware of a prior inventor-based disclosure, strategically invoking examination under the AIA may be critical to obtaining effective U.S. patent claims.

There might even be situations in which a patent applicant could, in effect, buy prior art in order to eliminate its negative effects. Specifically, under the AIA, disclosures appearing in competing U.S. applications that were filed before but published after the application being examined do not count as prior art if the applicant purchased them or entered into a joint research contract with the owner before the effective filing date of the claimed invention in question.19 In contrast, under the current law, any ownership interest must be obtained before the applicant's invention, i.e., at a much earlier point in time.20

There are a couple of ways in which an application could be transitioned to the AIA to attempt to overcome such prior art difficulties. In the scenario above where the May 2013 Paris Convention filing already contains new matter in comparison to the May 2012 British application, the applicant could add a claim relying on the new matter. Alternatively, where the May 2013 Paris Convention filing does not contain any new matter over the May 2012 filing, the applicant could file a U.S. continuation-in-part (CIP) application. For example, the CIP could add new matter of little commercial value as well as a claim relying on that new matter that could later be canceled. As a result, any claim in the CIP, regardless of its effective filing date, will be examined under the AIA.

Conclusion

In summary, patent applications drafted and filed in the coming months will present many challenges but also special opportunities. Thus, understanding and managing the U.S. law under which their claims are examined may be critical to obtaining an optimal scope of patent protection.

15 By petition, however, a delay in providing this information may be accepted with a petition fee if the applicant is able to state that the entire period of delay was unintentional. See 37 C.F.R. § 1.17(t) (2012).

16In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966) (establishing the prior art date of a patent as its first U.S. filing date).

17AIA, sec. 3, § 102(d), 125 Stat. 286-87.

18Id. sec. 3, § 102(b)(1), 125 Stat. 286.

19Id. sec. 3, §§ 102(a)-(b), 125 Stat. at 285-86.

20 35 U.S.C. § 103(c).

Originally printed in CIPA Journal. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.